Bgh Rules For Patentees On Appeal - Again

In 2 decisions published yesterday on its website, the High German Federal Court of Justice (Bundesgerichtshof, BGH) overturned 2 decisions past times the Federal Patent Court (Bundespatentgericht) invalidating the patents inwards accommodate for lack of novelty. Both decisions are remarkable non because they intermission novel solid set down inwards (patent) police describe (they don't), only rather because the BGH corrects the fact finding of the lower courtroom together with finds inwards favour of the patentees. They fuel the impression that the Federal Court of Justice is to a greater extent than patent-friendly than the Bundespatentgericht, or, to pose it some other way, that the Federal Patent Court has instruct overly strict.

In the first decision, designated a leading representative (Leitsatzentscheidung) past times the Court, the BGH finds that a fundamental witness lacked credibility together with concludes that the populace prior role which led the Federal Patent Court to invalidate the patent for lack of novelty was non established. The patent at final result was Nichia's EP 936 682, an important patent concerning white lite emitting diodes that has likewise been the dependent patch of opposition proceedings earlier the EPO. The determination is remarkable because the Federal Court of Justice is saltation past times the fact finding of the lower courtroom unless at that topographic point are specific doubts regarding the correctness together with completeness of the fact finding (§ 529(1) Civil Procedure Act). The Court held that at that topographic point were specific doubts every bit to the credibility of a fundamental witness for the populace prior use, whose testimony was inconsistent alongside that of other witnesses together with established facts. The twist was that the witness had died inwards the meantime together with could non hold out questioned again. This, therefore the BGH, did non forestall it from finding the testimony unpersuasive. After it had concluded that populace prior role was non proven, the Court assessed inventive measuring based on the tape earlier it together with found the dependent patch matter(s) of the claims to hold out inventive.

Fig. 1 of EP 1 389 985

In the second decision, the Federal Patent Court had found that claim 1 of EP 1 389 985 concerning a lower leg orthosis lacked novelty over the German utility model DE 299 08 981. It upheld an auxiliary claim. The patentee appealed. The Federal Court of Justice held that the lower courtroom had misconstrued the disclosure of the allegedly novelty destroying document together with that the document failed to bring out all the features of the invention. It together with then went on to assess novelty over two additional documents, likewise finding the excogitation non anticipated, together with assessed inventive measuring inwards a unmarried paragraph, final the plaintiff had failed to exhibit lack of inventive step. Again the patentee prevailed on appeal.